Grundfos v Hefei Xinhu Canned Motor Pump (CFI, 8 May 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

Decision on the merits of the Düsseldorf Local Division of 8 May 2025 in Grundfos’ infringement action against Hefei Xinhu Canned Motor Pump under EP 2 778 423 (centrifugal pump unit) and the counterclaim for revocation (UPC_CFI_11/2024). It dismissed the counterclaim, declared infringement and ordered an injunction, information, recall, destruction and an interim award of damages of EUR 64,000.

For practice, the decision holds that new prior art relied on in the reply to the defence to the counterclaim amends that counterclaim within the meaning of Rule 263.

Facts and procedure

The patent, granted in 2018 with no opposition, is in force in Germany, France and Italy. Grundfos accuses the Chinese defendant of offering heating circulator pumps in those three countries and seeks, among other things, an injunction, information, recall and destruction, a penalty payment and provisional damages. The defendant counterclaims for revocation of the whole patent for insufficiency, lack of novelty and lack of inventive step, relying on documents D1, D2, D5 to D8 and D20, and then on D15, D16, D17 and D19, filed for the first time in its reply. Grundfos defends the patent as granted and, in the alternative, by auxiliary requests. The oral hearing took place on 27 March 2025.

The applicable law

Jurisdiction rests on Article 32(1)(a) and (e) UPCA, absent a preliminary objection, it is deemed accepted (Rule 19.7). The scope of protection is determined by the claims, with the description and drawings used to interpret them (Article 69 EPC and its Protocol). Validity is assessed under Articles 54, 56, 83 and 138 EPC. Rule 263 governs amendments of claims in the course of proceedings.

Question

May new prior art be relied on for the first time in the reply to the defence to the counterclaim for revocation, and how are the « switching » and « connecting » means of claim 1 to be construed?

Decision

Both the action and the counterclaim are admissible (paragraphs 53 and 54). On construction, the division distinguished switching, a complete change from internal to external control, from connecting, the addition of external control alongside internal control (paragraphs 68 to 70). The means features are statements of purpose: the means need only be suitable to switch or to connect (paragraphs 71 and 75). The claim does not require decision logic in the pump (paragraphs 77 and 78), and the examples in the description do not limit it (paragraphs 79 and 80). Whether the prosecution history may be used was left open (paragraph 81).

Sufficiency was upheld: the objections to the meaning of « means » go to clarity, which is not a ground for revocation (paragraphs 83 to 87). D5 and D6 do not anticipate (paragraphs 95 to 102). D15, D16, D17 and D19 amount to an extension of the counterclaim under Rule 263, since the defendant gave no reason why they could not have been filed earlier, they were not admitted (paragraphs 103 to 107). On inventive step, assessed under the holistic approach based on a realistic starting point, the combinations of D6 with D5 and of D1 with D5 were rejected (paragraphs 109 to 125). The combinations of D1, D8 and D2 with D5 also failed (paragraphs 126 to 140). The attack based on D5 combined with D7 or D20, raised for the first time in the reply, was not admitted under Rule 263, and the Chinese decision revoking a parallel patent on that combination was disregarded under Rule 9.2 (paragraphs 141 to 145). The patent is therefore valid as granted.

The accused pump falls within claim 1: its microprocessor detects an external PWM signal and switches to that control, and the absence of any ability to decide is irrelevant (paragraphs 146 to 158), the alleged identity with an earlier Grundfos product was rejected, since that product works only under external control (paragraph 159). The division ordered an injunction, information and accounts with invoices from 28 February 2018, recall from trade customers, which neither the installation of pumps in buildings nor unsuccessful licence talks prevent (paragraphs 166 to 170), and destruction, sealing the inputs or obtaining undertakings from customers not being adequate alternatives (paragraphs 171 to 174). Liability in damages was declared and an interim award of EUR 64,000 made under Rule 119 (paragraphs 175 to 178), with penalties of up to EUR 250,000. The defendant bears the costs of both actions, each valued at EUR 1,000,000, the ceiling on recoverable representation costs was set at EUR 200,000 and no security was required (paragraphs 181 to 188).

Key points for practice

• New prior art filed in the reply to the defence to the counterclaim is treated as an amendment of that counterclaim under Rule 263.
• The defendant must then show that it could not have filed the documents earlier with reasonable diligence and that admitting them would not unreasonably prejudice the patentee.
• Means features drafted as statements of purpose are construed as requiring suitability, not actual performance of each function.
• Practical point: all prior art should be relied on in the counterclaim for revocation itself, as later admission is uncertain.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 32(1)(a) and (e), 63, 64, 67, 68, 69 and 82

Rules of Procedure

Rules 9.2, 19.7, 118.5, 118.8, 119, 191, 263 and 354.3

European Patent Convention

Art. 54, Art. 56, Art. 69 and its Protocol, Art. 83, Art. 138

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, Abbott Diabetes Care v Sibio, Court of Appeal, 14 February 2025, BITZER Electronics v Carrier, Paris Central Division, 29 July 2024, FUJIFILM v Kodak, Düsseldorf Local Division, 28 January 2025, Yellow Sphere v Knaus Tabbert, Düsseldorf Local Division (UPC_CFI_50/2024), and further first instance decisions cited in the reasons

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.